Category: Declaratory Judgment

Sonya Larson filed suit against Dawn Dorland Perry, Los Angeles-based Cohen Business Law Group, and attorney Jeffrey A. Cohen, seeking a declaration that a short story published by Larson does not infringe the copyright of a letter posted by Dorland Perry on Facebook. Dorland Perry donated a kidney to an anonymous recipient in 2015, and subsequently wrote a letter to the unknown recipient outlining the reasons for her donation and expressing interest in meeting the recipient. She posted the letter to a private forum on Facebook that included Larson. Larson, who acknowledges having had a nominal social relationship with Dorland Perry in the past, asserts she was included in the forum without her permission or authority and that she had seen Dorland Perry’s letter. Three years later, Dorland Perry registered her copyright in the letter. Larson authored a short story about a working class Chinese-American woman who receives a kidney from a wealthy white woman, with a primary goal of depicting a “person of color resisting a white savior narrative,” in which the recipient receives a letter from the previously-anonymous donor. Larson states that in preparing this portion of her story, she researched and viewed many websites and similar letters from organ donors that were widely available on the internet. After a public reading of a portion of her story was reported to Dorland Perry, Larson alleges that Dorland Perry believed the story to be about her and became very upset. In subsequent edits, Larson made changes to the story to distinguish the fictional letter from Dorland Perry’s actual letter. The story was subsequently published in audio book format and accepted for printed publication, at which point Dorland Perry is alleged to have instituted a smear campaign against Larson and repeatedly accused her of plagiarism to Larson’s employer, members of her writing group, various writing organizations, and the Boston Globe newspaper. Larson was moved to file the action when Attorney Cohen, representing Dorland Perry, sent a demand to her publisher that they case and desist from further printings of the story, and the acceptance for publication was rescinded. Larson’s claims against Cohen and his firm are based in part on their threat of statutory damages and attorney’s fees against her publisher, which Larson asserts Cohen knew or should have known were not legally viable, as registration occurred more than three years after Dorland Perry’s letter was first published. Larson also asserts tortious interference with contractual relationships, defamation, and violation of Ch. 93A.

After being sued for patent infringement by Maquet, Abiomed filed non-infringement counterclaims against Maquet its corporate parent, Swedish company Getinge AB. Judge Saylor granted Getinge’s motion to dismiss, agreeing that Getinge lacks standing to sue Abiomed and determining that this insulates Getinge from the declaratory judgment counterclaim. Judge Saylor noted that the counterclaim does not allege that a written agreement exists by which Getinge was given any rights in the subject patent, and absent a written transfer of rights, Getinge can have no rights in the patent. He refused to extend the doctrine of equitable title, stating that there is nothing inherently unfair or inequitable in a corporate subsidiary owning all rights in a patent or in the parent then exercising substantial control over the subsidiary that would require bringing the parent into the controversy. Accordingly, the counterclaim was dismissed as applied to Getinge (although it remains in place against Maquet).

Butler filed a complaint against Avent and O&M Halyard, Inc., seeking a declaratory judgment of non-infringement and cancellation of two trademark registrations claiming rights in the color purple for latex gloves. Butler, a manufacturer of home cleaning products, sells reusable purple latex gloves to Wegmans Food Markets, who then sells the gloves under the WEGMANS® brand. The registrations cover the color purple for “protective gloves for industrial use, and disposable nitrile gloves for use in laboratories and clean room environments,” “gloves for medical and surgical uses,” and “disposable nitrile gloves for general uses.” In April, Avent and O&M Halyard sent Wegmans a cease and desist letter, which was forwarded to Butler. After a response challenging the protectability of the color purple, Butler received a second cease and desist letter, setting up the DJ action. Butler asserts that the color purple is functional, in that laboratories use different color gloves for different areas to prevent cross-contamination or to signify the material the gloves are made of, as well as the existence of other purple gloves, asserted to preclude the color from serving as an identifier of source.

Alnylam filed suit against Silence Therapeutics, seeking a declaration that its Patisiran RNA interference product does not infringe five Silence patents. Patisiran is awaiting approval from the FDA for treatment of hereditary transthyretin-mediated ATTR amyloidosis, a genetic disease in which misformed proteins accumulate as deposits in the heart, erves, GI tract, and other organs, bringing forth a number of different symptoms. Currently, other than liver transplants for early-stage sufferers, there are no FDA-approved treatments for the disease. Alnylam asserts that it has spent hundreds of millions of dollars in developing Patisiran. Alnylam alleges that Silence, which has no products on the market or in advanced clinical trials, has claimed that Alnylam infringes the patents by correspondence in the United States as well as by filing infringement suits in Europe and challenging Alnylam patents on the technology in Europe. These disputes are on-going. Alnylam seeks declarations of non-infringment and injunctions prohibiting Silence from asserting infringement of the patents.

Oomph Hair filed suit against Hair Illusions and its founder, Salvatore Passariello, accusing them of infringing Oomph’s trademark, cybersquatting, falsely disparaging Oomph products, and other forms of unfair competition, as well as seeking declaratory judgment that Hair Illusion’s “hairline enhancement” trademark application is invalid as merely descriptive. Hair Illusions is purported to control 90% of the real hair fiber market (real hair fiber is, as near as I can tell, small hair fibers, that are temporarily adhered to natural hair, making thinning hair look fuller). Oomph claims that Hair Illusions uses unfair and tortious means to maintain this market share, such as threatening Oomph and Oomph customers with patent lawsuits, despite having no patent to assert (Passariello had a pair of application undergoing prosecution at the time; they have since gone abandoned). Oomph also asserts that Hair Illusion registered domain names confusingly similar to Oomph’s registered HAIR FUSION trademark, which disparage Oomph’s product (e.g., alleging that the product contains parasites) and redirect customers to Hair Illusion’s on-line store. Oomph seeks preliminary and permanent injunctive relief, transferal of the offending domain names, and monetary damages. Oomph filed a motion for a preliminary injunction concurrently with the filing of the complaint. Judge Zobel scheduled a hearing on the motion for March 28.

Office supply company W. B. Mason filed a declaratory judgment action against Dairy Queen, seeking the right to continue use of the mark BLIZZARD for paper products and spring water. W. B. Mason registered the marks BLINDING WHITE BLIZZARD 78 COPY PAPER and BLIZZARD BLINDING WHITE COPY PAPER, and sought to register the marks BLIZZARD SPRING WATER and WHO BUT W.B. MASON’S BLIZZARD SPRING WATER; the latter two applications were opposed by Dairy Queen. Settlement negotiations ensued. W. B. Mason asserts that recently, after lulling W. B. Mason to hold off on further action while his client was out of town, Dairy Queen’s attorneys filed suit in Minnesota (18-cv-00693) claiming trademark infringement and dilution. In light of this, W. B. Mason asserts that the “first-to-file” rule should not apply or, alternatively, an exception to the rule should control, and the case should proceed in Massachusetts rather than Minnesota. The case has been assigned to Judge Gorton.

About this blog…

The D. Mass. IP Litigation Blog will monitor the U.S. District Court for Massachusetts, with a special interest on patent, trademark, trade secret, antitrust, and copyright litigation. Since the Supreme Court’s TC Heartland decision, we have seen an increase in intellectual property filings in D. Mass. due to the high concentration of technology and life sciences companies in the Commonwealth and because of the Court’s ability to handle complex, accelerated matters. We plan on providing our readers with timely insights on recent cases.